The Complainant is Hoffmann-La Roche Inc. of Basel, Switzerland, represented internally.
The Respondent is Private Whois of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 6, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On March 9, 2012, I Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2012.
The Center appointed Bruce E. O'Connor as the sole panelist in this matter on April 16, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Given the default of Respondent, the Panel is entitled to and does draw the inference that all facts alleged in the Complaint are true. See paragraph 14(b) of the Rules.
Complainant is, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products. It is a member of the Roche Group, one of the world’s leading research-focused healthcare groups and having global operations in more than 100 countries.
Complainant’s mark ACCUTANE for a “dermatological preparation” is registered on behalf of the Complainant in the United States Patent and Trademark Office as of August 28, 1973 under Registration No. 966,924, with a first use in 1972. Same as Complainant, Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland. F. Hoffmann-La Roche AG owns and uses the domain name .
ACCUTANE is an alternative Trademark (United States version) for the Trademark ROACCUTAN.
The mark ACCUTANE designates a dermatological preparation in the form of a product indicated for the treatment and prevention of acne. This mark was extensively promoted for many years in print advertisements in medical journals, promotional materials, packaging, medical informational materials, television advertising and direct mailings. The sales of the ACCUTANE product in the United States have exceeded hundreds of millions of dollars.
The disputed domain name (the “Domain Name”) was registered by Respondent on February 27, 2012.
On or before the filing of the Complaint on March 6, 2012, the Domain Name was being used as part of a URL, "www.", for a website of a "Firstmedicine Online Pharmacy Store" offering for sale ACCUTANE preparations and other pharmaceuticals such as VIAGRA, CIALIS, and PROPECIA.
As of March 12, 2012, the Domain Name resolved to a website with the name of "" that is a parking page including sponsored listings with links to various websites. Featured on that parking page are links to "Recent Searches" all related to acne, the principal use for ACCUTANE preparations. Examples are searches for "Acne Rosacea Cure" and "Acne Skin Treatment." No reference to ACCUTANE preparations appears.
As of April 4, 2012, the Domain Name was inactive. 5. Parties’ Contentions A. Complainant
The Respondent’s Domain Name incorporates the Complainant’s trademark ACCUTANE in its entirety.
The addition of the suffix “aps” does not sufficiently distinguish the Domain Name from the Complainant’s mark. Furthermore, the Complainant’s use and registration of the mark ACCUTANE predate the Respondent’s registration of the Domain Name.
Therefore the Domain Name is confusingly similar to the mark ACCUTANE.
The Complainant has exclusive rights for the mark ACCUTANE. No license/permission/authorization consent was granted to Respondent to use the mark ACCUTANE in the Domain Name. Furthermore, it is obvious that the Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing on the fame of the mark ACCUTANE.
Therefore the Domain Name clearly alludes to Complainant.
Respondent is using the Domain Name to direct Internet users to a pharmacy on-line offering ACCUTANE as well as other drugs.
A reseller does not have the right to incorporate the trademark of the resold goods into the Domain Name of the reseller.
Respondent’s use of the Domain Name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the Domain Name.
There is no reason why the Respondent should have any right or interest in such Domain Name.
The Domain Name was registered in bad faith since at the time of the registration the Respondent had, no doubt, knowledge of Complainant’s well-known product/mark ACCUTANE.
The Domain Name is also being used in bad faith. This is obvious since when viewing the Internet-website from Respondent one realizes that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website.
Bad faith is established when Respondent is using a domain name as a forwarding address to a for-profit on-line pharmacy.
Respondent, by using the Domain Name, is intentionally misleading the consumers and confusing them by making them believe that its website is associated or recommended by Complainant.
As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ACCUTANE trademark fame. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph (4)(a) of the Policy states that the domain name can be cancelled or transferred where Complainant has established the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established rights in the trademark ACCUTANE. These rights come from Complainant's U.S. Trademark Registration No. 966,924.
The Panel finds the Domain Name is confusingly similar to the trademark ACCUTANE.
What distinguishes the Domain Name from the trademark are the additions of the letters "aps" and the top-level domain ".com".
The Panel notes that "aps" is an acronym for many words and word combinations. See "APS", Wikipedia, April 2, 2012. One of those acronyms is for "Anpartsselskab", the Danish word for a limited liability company. See "ApS", Wikipedia, July 8, 2011. To certain users, the second-level domain "accutaneaps" can be seen as the "ACCUTANE company." To other users, the letters "aps" are meaningless. To all users, the Panel finds the addition of the letters "aps" does not alter the overall impression that the second level domain is confusingly similar to the trademark ACCUTANE. And, addition of the generic top level domain ".com" adds no distinguishing feature.
Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the Panel's opinion, the circumstances of paragraph 4(c) are for Respondent to demonstrate, not for Complainant to disprove. Prior UDRP decisions opine, however, that Complainant should make a prima facie showing that Respondent does not come under those circumstances (e.g., De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant has made such a prima facie case.
The goods identified with the trademark ACCUTANE are dermatological preparations. Respondent, without authorization from Complainant, has offered for sale dermatological preparations and other pharmaceuticals on websites at the Domain Name, and began such offering long after Complainant established rights in the trademark ACCUTANE in 1973. Respondent's use of the Domain Name is an infringement of Complainant's rights in that mark, and is not bona fide under paragraph 4(c)(i) of the Policy.
Respondent's true name is hidden from view by a privacy service ("Private Whois "). It could be argued that inclusion of the Domain Name in the name of the registered owner demonstrates that the circumstances of paragraph 4(c)(ii) of the Policy are present. But, that paragraph requires that the Respondent be "commonly" known by the Domain Name. No such circumstance is shown here.
Finally, Respondent's use on its websites is for commercial gain and is not in accordance with paragraph 4(c)(iii) of the Policy.
Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). Proof of Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
The Panel finds that Respondent must have known of the trademark ACCUTANE when it registered the Domain Name. That trademark is distinctive on its face, being a coined word, and has no phonetic or visual equivalent known to the Panel. As another UDRP panel has stated,
Because the ACCUTANE mark is not descriptive of anything and has no other meaning than in connection with the Complainant's Mark, it is very unlikely that the Respondent would have registered a domain name incorporating the Mark without knowledge of the Mark. Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240.
Respondent's former on-line pharmacy website appears to sell not only ACCUTANE preparations but also other pharmaceuticals. Respondent's former parking page website included sponsored listings for searches for the treatment and cure of acne, the principal use for ACCUTANE preparations. The impression given to the user is that Respondent is authorized to sell these goods and provide these sponsored listings under the Domain Name. But, Complainant has not authorized Respondent to use the trademark ACCUTANE in the Domain Name. Respondent's registration and use of the Domain Name is a misrepresentation, based on likelihood of confusion, of the source, sponsorship, affiliation, or endorsement of Respondent's websites. See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (on-line pharmacy) and Lardi Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1437 (parking page).
Respondent's use of the Domain Name, coupled with its knowledge of the trademark ACCUTANE, establishes Respondent's bad faith registration and use of the Domain Name under the provisions of paragraph 4(b)(iv).
Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Bruce E. O'Connor
Sole Panelist
Dated: April 30, 2012
Full & Egal Universal Law Academy